Rfid tag with integrated disabling and method of use

ABSTRACT

Systems, tags and methods for disabling transponders used in electronic toll collection or other RFID systems, wherein the transponders include an antenna and RFID circuitry. The transponders can be selectively disabled by positioning (e.g., pivotably moving) a disabling member having a metallic portion to an operative position over the antenna of the RFID system, whereupon the metallic portion is coupled to the antenna in such a manner as to disable the RFID circuitry so long as the disabling member is at the operative position. The RFID circuitry is arranged to be automatically enabled upon removal of the disabling member from the operative position (e.g., pivoting the disabling member back to an inoperative position).

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a Continuation-In-Part of U.S. patent applicationSer. No. 12/056,574, filed on Mar. 27, 2008, entitled RFID Tag DisablingSystems And Methods Of Use, whose disclosure is incorporated byreference herein.

STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT

“Not Applicable”

INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A COMPACT DISK

“Not Applicable”

BACKGROUND OF THE INVENTION

This invention relates generally to RFID transponder systems and moreparticularly for RFID tags including disabling devices and methods ofuse for selectively disabling RFID transponders when desired.

In response to the inability of conventional toll collection means tomeet the demands created by increased highway traffic, automated tollfacilities that provide improved toll collection methods and systemshave been proposed and are being implemented. These electronic tollcollection systems eliminate the manual transactions of conventionaltoll collection means through the use of radio transmitters andreceivers that perform the necessary transactions as a vehicle travelsthrough the automated toll booth. For example, U.S. Pat. No. 7,224,291(Hassett), which is assigned to the same assignee as this invention,discloses a system for automatic collection of tolls includes anin-vehicle toll processor (e.g., an RFID transponder or tag) havingmemory for storing a toll-money-available quantity purchased by theuser, and a toll-facility-identification site that transmits atoll-facility-identifier signal indicating the identity of the upcomingtoll facility. As the vehicle approaches the identification site, thein-vehicle processor receives the identifier signal and calculates thetoll to be debited. When the vehicle passes through the toll facility,the in-vehicle processor transmits its identity, its net balance and thetoll, which it debits from an account balance. The in-vehicle processormay increment a low balance, in which case it transmits informationwhich is relayed to a central system for billing. Various means forshutting down delinquent in-vehicle components or identifying offendervehicles are described.

In some electronic toll collection applications, it is desirable todisable or temporarily degrade the performance of an RFID tag so that itcannot be read by an interrogating reader. One such situation can occurwhen more than one RFID tag is mounted in a vehicle windshield, and itis desired to read or write to one tag while preventing any interferencefrom the other. This can occur during RFID system testing, or on actualvehicles that travel interstate highways and are forced to use differenttags for various toll roads along the way. Another application is a tollroad with high occupancy toll (HOT/HOV) lanes. There may be times whereit would be desirable to temporarily disable an RFID tag, such as awindshield sticker tag, such that no toll is paid when traveling througha toll plaza. A person driving in the HOT/HOV lane that had someone elseor others in the vehicle with them would be allowed by the tollauthority to travel on the toll road without paying tolls. If a personwas alone and wanted to drive in the HOT/HOV lane, they too would beallowed, but would have to pay tolls, and therefore would not be allowedto use the tag disabling device.

In the past, RFID tags that were mounted to windshields using hook andloop fasteners, or suction cups, or other releasably securable meansthat allowed easy removal and re-installation of the tags, were disabledby removing them from the windshield and placing them in a metallizedbag, pouch or box. For example, the State of New Jersey makes use of“EZPass” RFID tags for its electronic toll collection system. As part ofthat system the State provides a “silver” (e.g., metallized) “readprevention bag” for users of the EZPass tag. Such users are instructedto insert the tag into the bag for situations where the tag is not to beread at a particular toll plaza. The placement of the tag within thatbag will prevent the RFID tag from being read or written to by aninterrogating system by shielding the tag from RF energy that theinterrogator transmits. In particular, the bag or pouch reflects most orall of this energy, thereby cutting off communication between the tagand the reader. The disadvantage of this type of tag disabling method isthat the tag has to be removed from the windshield to accomplish it.

The prior art includes other instances where an RFID transponder can betemporarily shielded so that it cannot be read. For example, Emvelope,Inc. offers a device under the trademark Emvelope® that provides aninsert for a wallet or billfold to fowl a Faraday cage to contain thewireless signals being emitted by RFID chips on cards in the wallet orbillfold. Emvelope, Inc. also offers a similar device in the form of acover for use with passports. Magellan's International also offers aproduct, which it calls an RFID Passport Wallet, that is arranged tohold and protect passports and credit cards by providing protectiveshield, so the RF data in the card/passport can only be accessed whenthe user opens his/her wallet at approved locations.

While the foregoing techniques for temporarily disabling or shieldingRFID transponders are generally suitable for their intended purposes fortheir specific applications, such techniques are not suitable fortemporarily disabling RFID transponders that are permanently affixed toa vehicle, e.g., sticker tags bearing RFID transponders secured to theinner surface of the vehicle's windshield or RFID transpondersencapsulated in the windshield itself.

Recently, RFID ‘sticker’ tags have become increasingly popular, e.g.,Transcore, Inc. provides such tags. These types of tags are lessexpensive, easier to use, easier to distribute and have more capabilitythan the previous tags constructed of conventional printed circuitboards and housed in a plastic case. Another advantage is that the‘sticker’ tags are designed to be permanently mounted and thus providemore security from fraud by preventing tags to be moved from one vehicleto another. The disadvantage of not being able to move tags betweenvehicles is offset by the lower cost so that an individual tag can beissued to each vehicle economically. A disadvantage of the permanentlymounted ‘sticker’ tags, however, is that they can't be temporarilydisabled. For example, once removed from the windshield, the adhesive ona windshield sticker tag, such as that produced by Transcore, Inc., canbe damaged. Since the antenna design in this tag relies on uniform closeproximity to the glass for proper operation, the tag cannot be reused.Thus, sticker tags and any other permanently mounted transponder wouldbe read every time it passed within the RF field of an applicableinterrogation system, even when the user did not desire to have the RFIDtag read, e.g., to disable the tag when it was desired to pay using cashor other means.

RFID tags can be permanently disabled by mechanical destruction of theconductive patterns on the tag. An example is provided in U.S. Pat. No.7,277,016 (Moskowitz et al.). While permanent tag disabling has certainviable applications, by definition it is unsuitable for applicationswhere the tag is to be disabled only temporarily and so that it can bereused at some later time.

Prior to the invention of the aforementioned patent application Ser. No.12/056,574, a need existed for a device and method to temporarilydisable sticker or other permanently mounted tags with the ease andsimplicity as has characterized the temporary disablement of hard casedtags (e.g., by removal and placement in a remote location or in ashielding pouch so that the tag could not be read). A need also existedfor a device and method for the temporary disablement of a permanentlymounted tag to be controlled by the user of the tag without dismountingor damaging the tag. A need also existed for enabling an RFID tag patronto use a permanently mounted RFID transponder, which is more secure thana removable transponder, but still has the flexibility to enable ordisable operation of the RFID tag, as necessary.

In our aforementioned U.S. application Ser. No. 12/056,574, from whichthe subject application claims priority, those needs were addressed byproviding ‘sticker’ tags and other permanently mounted RFID transducerswith this same capability of temporary disablement while retaining allthe other positive attributes of a permanently mounted tag/transponder.In particular, the invention disclosed in that application provided adevice for application to (e.g., mounting over) the sticker tag or anyother RFID transponder fixedly mounted on the windshield or some otherportion of the vehicle for the temporarily disabling the RFIDtransponder, wherein the disabling device is removable, reusable, andable to be stored within a vehicle without being damaged. In addition,that invention enabled the patron to maintain privacy if so desired.

The subject invention extends the invention of that aforementionedapplication by providing a system and a method of use, wherein the tagincludes an integrated means for selectively disabling it.

BRIEF SUMMARY OF THE INVENTION

A system and method for selectively enabling and disabling an RFIDtransponder located on a vehicle so that said transponder can beselectively disabled and enabled. The transponder comprises an antennaand RFID circuitry.

In accordance with one aspect of this invention the tag includes anintegrated disabling member arranged for selectively disabling andenabling the transponder. The transponder is located within a body(e.g., a card) arranged to be fixedly secured to the vehicle (e.g.,mounted on the windshield). The disabling member is connected to thetransponder body and arranged to be moved (e.g., pivoted) from aoperative position with respect to the transponder body to aninoperative position with respect to the transponder body, and viceversa. The disabling member comprises a metallic portion, which iscoupled to the antenna in such a manner as to disable the RFID circuitrywhen the disabling member is in the operative position (e.g., to alterthe impedance of said antenna to shift its resonance frequency when saiddisabling member is in the operative position or to reduce the electricfield at the antenna when the disabling member is in said operativeposition). The RFID circuitry is arranged to be automatically enabledwhen the disabling member is moved to the inoperative position.

Another aspect of this invention is a method of selectively disabling atransponder located on a vehicle that is operating in an electronic tollsystem (e.g., an electronic toll system forming a portion of a roadwaythat includes a high occupancy vehicle or high occupancy toll (HOV/HOT)lane) or some other system wherein the transponder is in the form of atag fixedly secured to the vehicle and arranged to provide a firstelectrical signal when queried by a transmitter forming a portion of thesystem. The transponder of the system includes an antenna and RFIDcircuitry. The tag also includes a movable disabling member, including ametallic portion, connected to the tag. The method basically entailsmoving the disabling member to an operative position with respect to theantenna when it is desired that the transponder be disabled (e.g., whenthe vehicle is utilized in the HOV/HOT lane with at least the minimumnumber of occupants to meet the HOV/HOT requirements of the entityoperating the electronic toll system, so that the account associatedwith the transponder will not be charged a toll). This action couplesthe metallic portion of the disabling member to the antenna in such amanner as to disable the RFID circuitry from producing the firstelectronic signal so long as the disabling device is in the operativeposition. The RFID circuitry of the system is arranged to beautomatically enabled upon removal of the disabling device from theoperative position.

BRIEF DESCRIPTION OF SEVERAL VIEWS OF THE DRAWINGS

The invention will be described in conjunction with the followingdrawings in which like reference numerals designate like elements andwherein:

FIG. 1 is an exploded isometric view of one exemplary tag disablingdevice constructed in accordance with this invention and shown ready tobe placed in its operative position over a sticker tag located on theinner surface of the windshield of a vehicle;

FIG. 2 is a top plan view of the device of FIG. 1 shown in place in itsoperative position;

FIG. 3 is a side elevation view taken along line 3-3 of FIG. 2;

FIG. 4 is a side elevation view taken along line 4-4 of FIG. 2;

FIG. 5 is a top plan view of another embodiment of a tag disablingdevice constructed in accordance with this invention;

FIG. 6 is a side elevation view taken along line 6-6 of FIG. 5;

FIG. 7 is a front elevation view of an RFID tag with an integrateddisabling member constructed in accordance with another aspect of thisinvention, showing the disabling member in its operative position fordisabling the tag;

FIG. 8 is a front elevation view, similar to FIG. 7, but showing thedisabling member in its inoperative position for enabling the tag;

FIG. 9 is a sectional view taken along line 9-9 of FIG. 7; and

FIG. 10 is a sectional view taken along line 10-10 of FIG. 8.

DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS OF THE INVENTION

Referring now to the drawing wherein like characters refer to likeparts, there is shown in FIGS. 1 and 5, exemplary tag disabling devices20 and 20′, respectively, each of which is arranged for selectivelydisabling an RFID transponder 22 used in an electronic toll system (notshown), an electronic parking system or any other system, such asvehicular access control, traffic monitoring, parking, and the likewherein a vehicle with the RFID tag is to be interrogated by a reader todetermine the vehicle's presence at a certain location. The tagdisabling devices 20 and 20′ are exemplary of a multitude of tagdisabling devices that can be constructed in accordance with thisinvention. Such tag disabling devices have particular utility for usewith RFID tags that are permanently or fixedly secured to the vehiclesto selectively disable such tags, yet permit their ready re-enablement.Examples of transponders fixedly secured to the windshield of a vehiclewith which the tag disabling devices of this invention may be used aredisclosed in U.S. Pat. Nos. 6,121,880 (Scott et al.) and 7,301,462(Holling et al.); and in U.S. Published Application 20060250250 (Youn),whose disclosures are incorporated by reference herein. An example of atransducer embedded in the glass of a windshield of a vehicle with whichthe tag disablers of this invention may be used is found in U.S. Pat.No. 6,275,157 (Mayes et al.), whose disclosure is also incorporated byreference herein.

It should be pointed out at this juncture that the RFID transponders ofthe aforementioned patents/application are not all inclusive. Thus, thetag disabling devices of this invention can also be used with standardRFID tags that are in hard cases.

In the exemplary embodiment shown in FIG. 1, the transponder 22 is inthe form of a “sticker” tag, like that disclosed in the heretoforeidentified Scott et al. patent. In particular, the exemplary tag 22basically comprises a generally planar, card-like member 22A that isadhesively secured to the windshield 10 of a vehicle. The card 22Aincludes flexible circuit substrate (not shown) having an antenna (notshown) formed thereon and transponder (RFID) circuitry disposed on thesubstrate and coupled to the antenna. The antenna exhibitscharacteristic impedance that is defined in part by a dielectricconstant of the flexible circuit substrate in combination with adielectric constant of the glass surface of the windshield 10 on whichit is mounted. As a result, a proper impedance match between the antennaand the transponder circuit is achieved only when the sticker tag isaffixed to the glass surface. The RFID circuitry of the sticker tagincludes a memory having a read-only portion and a re-writable portionand may be in the form of an electronic chip 22B, e.g., an off the shelfitem or an ASIC. Typically the chip portion 22B of the tag 22 projectsslightly outward from the back surface of the card 22A when the tag ismounted on the windshield of the vehicle.

The tag disabling device 20 shown in FIG. 1 basically comprises agenerally planar member having a body 24 including a metallic portion(to be described later) and means 25 for releasably securing the body tothe windshield 10 of the vehicle so that the metallic portion is at anoperative position over the tag 22. When the device is in the operativeposition the metallic portion of the tag disabling device 20automatically disables (i.e., prevents proper operation of) thetransponder 22. This action is accomplished in ways that differ from thetechniques of the prior art. In particular, the tag disabling devices ofthis invention create an RF short of the incident interrogation RFfield. This action reduces the electric field to zero at the surface ofthe tag disabling device. Moreover the tag disabling devices also detunethe antenna due to capacitive coupling of the antenna with the tagdisabling device. Both of these actions effectively disable properoperation of the tag. However, it should be pointed out that either ofthese two actions could be used separately to disable the RFID tag.Thus, both are not required. The operation of the tag may also degradedby changing the characteristics of the matching section which matchesthe antenna impedance to the chip impedance so as to degrade theperformance of the tag to the point where it cannot be read.

The tag disabling devices of this invention do not have to fully coverthe antenna. For example, a tag disabling device of this invention couldwork simply by changing the electric field in the vicinity of theantenna matching section, which matches the impedance of the antenna tothe impedance of the chip (off the shelf electronic device or ASIC).This change of the field around the matching section would change thematching of the impedance of the antenna to the chip and disable propertag—reader communications without substantially changing the RF fieldaround the resonant elements of the antenna. This can be accomplished byusing a conductor or an RF absorbent material in a relatively smallarea.

A tag disabling device in accordance with this invention could also beconstructed which would not change the impedance of the antenna, butwould short the electric field, thus disabling proper communications aswell. Alternatively a tag disabling device in accordance with thisinvention could also be constructed to change the impedance of theantenna, but not short the electric field, thus disabling propercommunications. Shorting the interrogating field and detuning theantenna impedance also do not require that the complete tag be coveredby the tag disabling device. These methods of using less than full-areacoverage of the tag require more precise placement of the tag disablingdevice, however.

In the exemplary embodiment shown the entire body 24 of the tagdisabling device 20 is metallic, e.g., the body 24 is formed of a thinmetal, e.g., aluminum (although other metals can be used as well), sheetof generally rectangular shape. Such a configuration is merelyexemplary. Thus, the body of any of the tag disabling devices of thisinvention may be of any suitable shape and may be formed of othermaterials, e.g., various types and grades of plastic, such aspolycarbonate, or static cling vinyl, so long as a portion of the deviceis metallic or has metal deposited or adhered to one or both sides ofthe plastic, and that portion is of sufficient extent so that when it isdisposed over the antenna of the tag it disables operation of tag sothat the tag cannot be read. Moreover, the tag disabling devices of thisinvention can be made larger than the RFID tags, which enable them to beseen from the outside of the vehicle for enforcement considerations, orthey can be made smaller than the RFID tag, as long as certain criticalareas of the antenna are covered by the metal of the device. Thiscritical area varies depending on the RFID tag antenna design.

The body 24 of the device 20 has a central ridge forming on itsundersurface a channel or recess 26 located between a pair of generallyplanar body portions 28A and 28B. The recess is provided to accommodatethe projecting portion 22B of the tag. The two, planar body portions 28Aand 28B are coplanar with each other and their inner surface is arrangedto abut or be in very close proximity to the outer (back) surface of thetag 22 when the device is in the operative position (as will bedescribed later). A flange 30A projects upward and outward from theouter marginal edge of the body portion 28A, while a similar flange 30Bprojects upward and outward from the outer marginal edge of the bodyportion 28B. Each of the flanges 30A and 30B defines a respective recesson its undersurface. Each recess 30A and 30B is shallow and is arrangedto receive a respective one of the releasable securing means 26 forreleasably mounting the tag disabling device at its operative positionon the windshield, so that the planar portions 28A and 28B are inengagement or very close proximity to the outer surface of the tag 22and thus are very close to the tag's antenna.

In the exemplary embodiment shown in FIGS. 1-5, the releasably securablemeans 26 constitutes thin cooperating strips (to be described later) ofa hook and loop, e.g., VELCRO®, fastening system. Other releasablysecurable fasteners, e.g., suction cups, etc., can be disposed in therecesses 30A and 30B in lieu of the hook and loop fasteners toreleasably mount the tag disabling device at the operative position onthe windshield. The size and shape of the central channel 26 and the twoplanar body portions 28A and 28B are sufficient so that when the tagdisabling device is releasably secured to the windshield over the tag atthe operative position enough of the antenna of the tag is covered bythe metal to disable the operation of the tag. To that end, in theexemplary embodiment shown the width of the tag disabling device betweenthe two flanges 30A and 30B is just slightly wider than the width of thesticker tag 22. Moreover, the depth of the recess 26 is selected so thatit can readily accommodate the portion of the tag 22 that projectsoutward from the rear surface of the tag, e.g., the ASIC, so that thebody portions 30A and 30B can be in very close proximity to the tag'santenna to ensure that proper disabling occurs when desired and toprovide relief from direct pressure. It should be clear that the use ofa channel to accommodate the projecting portion 22A of the tag is merelyexemplary. Thus, other shaped recesses can be provided to accommodateany projecting portion of the tag. If the back surface of the tag isplanar the tag disabling device need not include any central recess.

As will be appreciated by those skilled in the art from the foregoing,when the tag disabling device is in place in the operative position overthe tag it will be very close to the inner surface of the windshield. Inorder to facilitate the ability of the user to remove the device when itis no longer required to disable the tag, the device includes fourprojecting ears or handles 32, 34, 36 and 38. Each handle is in the formof a flange projecting upward and outward from a respective edge of anassociated body portion. For example, the handle 32 projects upward andoutward from the top edge of the planar body portion 28A, while thehandle 34 projects upward and outward from the bottom edge of that bodyportion. In a similar manner the handle 36 projects upward and outwardfrom the top edge of the planar body portion 28B, while the handle 38projects upward and outward from the bottom edge of that body portion.The space between the bottom (inner) surface of each of the bodyportions 28A and 28B and the underside of each of the device's handlesenables the user of the device to readily grasp the handles to effectthe easy removal of the device from the windshield when so desired.

The details of the exemplary hook and loop fastening means 25 will nowbe described with particular reference to FIGS. 1 and 2-4. Thus, as canbe seen the tag disabling device 20 includes two pairs 25A and 25B ofcooperating VELCRO® strips. In particular, the strip 25A basicallycomprises an elongated strip 40A having the plural hook like elementsand an elongated strip 42A having plural loops. The strip 40A is fixedlysecured, e.g., adhesively secured, to the undersurface of the flangeforming the recess 30A. The strip 42A is initially releasably secured byits loops to the hook like elements of the strip 40A, but is arranged tobe fixedly secured to the windshield of the vehicle closely adjacent onelateral side of the tag 22 and to be left in place in that locationafter having been initially placed thereat. To that end, the outersurface of the strip 42A includes an adhesive (not shown) thereon. Theadhesive is initially protected by a removable cover or liner sheet (notshown). In a similar manner, the strip 25B basically comprises anelongated strip 40B having the plural hook like elements and anelongated strip 42B having plural loops. The strip 40B is fixedlysecured, e.g., adhesively secured, to the undersurface of the flangeforming the recess 30B. The strip 42B is initially releasably secured byits loops to the hook like elements of the strip 40B, but is arranged tobe fixedly secured to the windshield of the vehicle closely adjacent theopposite lateral side of the tag 22 and to be left in place in thatlocation after having been initially placed there. To that end, theouter surface of the strip 42B includes an adhesive (not shown) thereonwhich is also initially protected by a removable cover or liner strip(not shown). The VELCRO® strips making up pairs 25A and 25B are locatedon the undersurface of the flanges 30A and 30B between respective pairsof indicia lines 44 provided on the undersurface of those flanges.

It should be pointed out at this juncture that the strips 40A and 42Amay be the loop components of the VELCRO® system and the strips 40B and42B be the hook elements of that system, if desired. Moreover, asmentioned above, other releasably securable means can be utilized toreleasably secure the tag disabling devices of this invention in placein the operative position with respect to the RFID antenna of thetransponder. Such means can comprise the heretofore mentioned suctioncups, but can also comprise a static cling material(s).

As also mentioned above the tag disabling devices of this invention canbe made larger than the RFID tags or they can be made smaller than theRFID tag, as long as certain critical areas of the antenna are coveredby the metal of the devices. The exemplary embodiment 20 shown in FIG. 1is larger than the tag 22 and has the following dimensions (suchdimensions being exemplary of many sizes and shapes the devices maytake). The device's overall width is 4.3 inches (10.9 cm). Its overallheight is 3.94 inches (10 cm). The width of the channel 26 is 0.56 inch(14.2 mm). The maximum thickness (i.e., the distance between the outersurface of the portions 28A and 28B which engage or are immediatelyadjacent the outer surface of the tag's card 22A when the device is inthe operative position and the top of the ridge forming the recess 26)is 0.26 inch (6.6 mm). The depth of the recesses formed by theundersurfaces of the flanges 30A and 30B in which the VELCRO® strips 25Aand 25B are located is 0.12 inch (3 mm). The length of each of theflanges 30A and 30B is 3.38 inches (8.6 cm). The width of each of thehandles 32, 24, 36 and 28 is 1.32 inches (3.3 cm).

The initial installation and use of the tag disabling device will now bedescribed. To that end, the tag disabling device 20 is initiallyprovided to a user with the two pairs of cooperating VELCRO® hook andloop strips 25A and 25B secured to the underside of flanges 30A and 30B,respectively. The device is designed so that the VELCRO® strips 40B and42B are deposited and fixedly secured to the inner surface of thewindshield on respective sides of the sticker tag (or on any othersurface of the vehicle on which the transponder is affixed if it is notaffixed to the inner surface of the windshield). Thus, once those stripsare secured in that position they will remain resident there. Thecooperating VELCRO® strips 40A and 42A remain fixedly secured to theundersurface of the flanges 30A and 30B, respectively. In order tofacilitate proper affixation of the strips 40B and 42B to thewindshield, it may be desirable to clean the windshield's inner surfaceimmediately to the left and right of the sticker tag. This may beaccomplished through the use of an alcohol wipe or any other suitablecleaner. Once those areas of the windshield are clean all the user hasto do is to remove the peel-off cover or liner strips (not shown) thatare initially provided to protect the adhesive surfaces of the VELCRO®strips 40B and 42B. The user then positions the tag disabling device 20as shown in FIG. 1 so that it is juxtaposed over the sticker tag 22 withthe raised ridge (channel 26) in the middle of the device fittingdirectly over the projection 22B of the tag. This action causes theVELCRO® strips 40B and 42B to become secured to the windshieldimmediately adjacent the two lateral sides of the tag. When viewedthrough the vehicle's windshield, the windshield sticker tag is visibleunderneath the tag disabling device. To further expedite ensure propersecurement of the VELCRO® strips 40B and 42B to the windshield it isadvisable to leave the tag disabling device in place on the windshieldfor a sufficient time for the adhesive to cure, e.g., at least 24 hours.Once the adhesive has cured the tag disabling device 20 can be removed(assuming that it is not needed at the time to disable the sticker tag).

To remove the device 20 all one has to do is to grip it by its upper andlower handles and pull it away from the windshield. The strips 40B and42B will remain on the windshield ready to receive respective ones ofthe strips 40A and 42A that remain affixed to the tag disabling devicewhen the tag disabling device is reapplied to the tag to disable it atsome later time.

Use of the device is as follows. For example, if the user of the vehicledoes not want his/her account billed for a toll when the vehicle is usedon a roadway forming a portion of an electronic toll collection system,such as when the user has the required number of occupants in his/hervehicle to use a HOV/HOT lane, all the user has to do is apply the tagdisabling device in a similar manner as it was initially applied to thewindshield. By so doing its VELCRO® strips 40A and 42A that are affixedto the undersurface of the flanges 30A and 30B will engage the VELCRO®strips 40B and 42B, respectively, that are permanently secured to thewindshield on opposite sides of the tag. This releasably secures the tagdisabling device in the operative position with respect to the tag 22,thereby disabling the tag's operation.

When, the disabling device is not desired to be used, e.g., if thevehicle does not contain the required number of occupants to use theHOV/HOT lane, or if the user of the vehicle wishes to pay the tollsmanually, the user merely removes the tag disabling device as describedabove. Once removed, the tag disabling device is preferably stored inthe vehicle's glove box or console compartment to be ready for use whenrequired again.

In FIGS. 5 and 6 there is shown another embodiment 20′ of a tagdisabling device constructed in accordance with this invention. Thedevice 20′ is very similar in construction to the device 20, except thatit doesn't include the handles 32, 34, 36, and 38 to facilitate removalof the device. In the interest of brevity the details of theconstruction, use and operation of the device 20′ will not bereiterated. Moreover, the components of the devices 20′ that are thesame as those of the device 20 are given the same reference numbers. Useof the tag disabling device 20′ is the same as that of the tag disablingdevice 20, except that for removal the user will have to grasp whateverportions of the device 20′ are accessible to accomplish that end.

In. FIGS. 7-10 there is shown a tag 100 having an integrated disablingmember constructed in accordance with another aspect of this invention.In this embodiment of the invention the disabling member forms a portionof the tag (e.g., is pivotably connected to the tag) and is movable fromits operative position (where it disables the transponder) to itsinoperative position (where the transponder is automatically enabled),and vice versa. With the disabling member being connected to the tag,but moveable with respect to the tag, the risk of loss or misplacementof the disabling member is eliminated while still retaining the benefitsof selective enabling/disabling.

Referring now to FIGS. 7 and 8, the details of the tag 100 will now bedescribed. As can be seen the tag 100 basically comprises a transponder102 and a disabling member 104. The disabling member 104 is pivotablyconnected to the transponder 102 via a hinge 106. The transponder 102 ispreferably in the form of a “sticker” tag, like tag 22. To that end, itbasically comprises a generally planar, card-like body 122A that isadhesively secured to the windshield 10 of the vehicle. The body 122Aincludes flexible circuit substrate (not shown) having an antenna (notshown) formed thereon and transponder (RFID) circuitry disposed on thesubstrate and coupled to the antenna. As with tag 22, the RFID circuitryof the transponder 102 includes a memory having a read-only portion anda re-writable portion and may be in the form of an electronic chip 122B,e.g., an off the shelf item or an ASIC. Typically the chip portion 122Bof the transponder body 122A projects slightly outward from the backsurface 122C of the body 122A when it is mounted on the windshield ofthe vehicle as best seen in FIGS. 9 and 10.

The tag disabling member 104 is a generally planar member having aninner surface 104A (FIG. 10) and an outer surface 104B (FIG. 10). Themember 104 includes a metallic sheet, which is preferably encased inplastic, but may, if desired, be exposed, and is pivotably connected tothe sticker tag body 122A via a hinge 106.

The member 104 is arranged to be held in one of two orientations orpositions, namely, the operative position like shown in FIGS. 7 and 9wherein it disables the operation of the transponder, and theinoperative position like shown in FIGS. 8 and 10 wherein thetransponder is not disabled (i.e., is automatically enabled). To thatend, when the member 104 is in the operative position of FIG. 7, itsmetallic portion overlies the transponder 102 to automatically disable(i.e., prevent proper operation of) the transponder 102 in a mannersimilar to the operation of the disabling device 22 describedheretofore. When the tag disabling member 104 is in its inoperativeposition the metal portion of the disabling member does not overlie thetransponder, but is rather disposed laterally of it, whereupon thetransponder is not disabled.

As discussed earlier with respect to the embodiments of FIGS. 1-6, thetag disabling member 104, like the device 22, does not have to fullycover the antenna of the transponder to disable it. For example, itcould work simply by changing the electric field in the vicinity of theantenna matching section, which matches the impedance of the antenna tothe impedance of the chip (off the shelf electronic device or ASIC).This change of the field around the matching section would change thematching of the impedance of the antenna to the chip and disable propertag—reader communications without substantially changing the RF fieldaround the resonant elements of the antenna. This can be accomplished byusing a conductor or an RF absorbent material in a relatively smallarea. In fact, the tag disabling member 104 could be constructed so thatit would not change the impedance of the antenna, but would short theelectric field, thus disabling proper communications as well.Alternatively the tag disabling member could be constructed to changethe impedance of the antenna, but not short the electric field, thusdisabling proper communications. Shorting the interrogating field anddetuning the antenna impedance also do not require that the complete tagbe covered by the tag disabling member. These methods of using less thanfull-area coverage of the tag require more precise placement of the tagdisabling device, however.

In the exemplary embodiment 100 virtually the entire body of thedisabling member 104 is metallic, e.g., it is formed of a thin metal,e.g., copper or aluminum (although other metals can be used as well),sheet of generally rectangular shape. Such a configuration is merelyexemplary. Thus, the body of any of the tag disabling member may be ofany suitable shape and may be formed of other materials as describedearlier.

Inasmuch as the chip portion 122B of the tag 100 projects slightlyoutward from the back surface 122C of the body 122A, the disablingmember 104 includes an opening 108 to receive the chip portion 122B asshown clearly in FIGS. 7 and 9 when the tag disabling member is in itsoperative position. This allows the tag disabling member 104 to bebrought into very close proximity to the tag's antenna to ensure thatproper disabling occurs when desired and to provide relief from directpressure.

In order to hold the tag disabling member 104 in either its operative orinoperative positions, releasably securable fasteners are provided. Tothat end, the tag 100 includes VELCRO® hook and loop fasteners mountedon it and one VELCRO® fastener is mounted on the windshield 10 of thevehicle. In particular, a strip 110 of one component, e.g., the hookelement, of a VELCRO® hook and loop fastening system is fixedly securedto the rear surface 122C of transducer body 122A adjacent the lower edgeat approximately the middle of the width of the body 122A. The strip 110includes a free end portion 112 (FIG. 9) which is not secured to the tagand whose undersurface comprises the hook like elements of the VELCRO®fastening system. The free end portion 112 of the strip is arranged tobe grasped by the user to be flexed back as shown in FIG. 10, forreasons to be discussed later. A strip 114 (FIGS. 8-10) of the other(cooperating) component, e.g., the loop component, of the VELCRO®fastening system is fixedly secured on the outer surface 104B of the tagdisabling member 104 adjacent the lower edge thereof and atapproximately the middle of the width of the disabling member. Anotherloop element VELCRO® strip 116, like strip 114, is fixedly secured tothe windshield 10.

Use of the tag 100 is as follows. Assuming that the tag is in thedisabled state to start, but is to be enabled, the user grasps the freeend 112 of the VELCRO® strip 110 to flex it back to the orientationshown in FIG. 10, thereby disconnecting it from the cooperating VELCRO®strip 114 on the tag body 122A. This action enables the user to pivotthe disabling member 104 from its inoperative position shown in FIGS. 7and 9 upward about the hinge 106. The outer surface of the tag disablingmember can then be brought into a close, confronting relationship withthe windshield so that the VELCRO® strip 114 on the disabling memberreleasably engages the VELCRO® strip 116 on the windshield. Thisreleasably holds the tag disabling member in the inoperative position,whereupon the tag 100 is automatically enabled. When it is desired todisable the tag, all that is required is to pivot the tag disablingmember downward, to break the releasable securement between the VELCRO®strips 114 and 116. The tag disabling member can then be pivoted furtherdownward until its inner surface 104A closely confronts the outersurface 122C of the tag 100. When this has occurred, the free end of theVELCRO® strip 110 can be flexed towards the tag to releasably engage thestrip 114 on the tag disabling member. This action releasably securesthe tag disabling member in its operative position, whereupon thetransponder is disabled.

If desired the tag 100 may include indicia to indicate the status of thetag, e.g., disabled or enabled. For example, the tag may include acolored portion, e.g., red, on the outer surface 104B of the disablingmember so that it is readily visible through the windshield when the tagis in the enabled condition. The indicia may be alphanumeric, e.g., anumber, such a “1” to indicate that there is only a single person in thevehicle. The colored or alphanumeric indicia can be provided on anyportion of the tag, e.g., on the disabling member 104 or on thetransducer 102 and at any location to enable it to be seen through thewindshield so that the status of the tag can be visually assessed.

It should be noted that the embodiment shown in FIGS. 7-10 is merelyexemplary of numerous embodiments of this invention wherein thetransducer disabling member is movably connected to the tag itself.Thus, the movement can be pivoting movement, like shown and described,or any other movement, so long as the tag disabling member can bebrought from one position, where it doesn't disable the tag, to anotherposition where it does disable the tag, and vice versa.

It should also be noted that the connectors (e.g., the VELCRO® hook andloop fasteners) that are disclosed for releasably holding the disablingmember in either the operative or inoperative positions are alsoexemplary. Thus, such connectors can be used in other locations on thetag and windshield, e.g., on one or more corners of the tag. In fact,other types of releasably securable connectors, e.g., suction cups,etc., can be used in lieu of hook and loop fastening members.

As should be appreciated from the foregoing the tag disabling thedevices of the subject invention have various applications. For example,when more than one RFID tag is mounted on or in a vehicle windshield,and it is desired to read or write to one tag while preventing anyinterference from the other, the tag disabling device/member can be usedto disable the tag which is not to be read. This can occur during RFIDsystem testing, or on actual vehicles that travel interstate highwaysand are forced to use different tags for various toll roads along theway. Another application is a toll road with high occupancy toll(HOT/HOV) lanes. There may be times where it would be desirable totemporarily disable an RFID tag, such as a windshield sticker tag, suchthat no toll is paid when traveling through a toll plaza. A persondriving in the HOT/HOV lane that had someone else or others in thevehicle with them would be allowed by the toll authority to travel onthe toll road without paying tolls. If a person was alone and wanted todrive in the HOT/HOV lane, they too would be allowed, but would have topay tolls, and therefore would not be allowed to use the tag disablingdevice/member. Still another application is to be able to temporarilydisable a permanently fixed RFID tag mounted on the windshield of avehicle so that an alternative tag could be used and the toll chargesbilled to an alternative account. For example a driver using a personalcar with a personal tag could temporarily disable the personal tag andhave the tolls for business purposes billed on a business account withan alternative tag. Yet another application is to temporarily disable apermanently fixed RFID tag and pay toll with a coupon, token or cash.This list of applications for the subject invention is not exhaustiveand other uses for temporarily disabling a permanently installed RFIDtag are within the scope of this invention. Similar uses includeapplications in vehicular access control, traffic monitoring, parking,and the like.

While our invention has been described in detail and with reference tospecific embodiments thereof, it will be apparent to one skilled in theart that various changes and modifications can be made therein withoutdeparting from the spirit and scope thereof.

1. An RFID tag arranged for mounting on a vehicle, said tag comprisingan RFID transponder and an integrated disabling member arranged forselectively disabling and enabling said transponder, said transpondercomprising an antenna and RFID circuitry, said transponder being locatedwithin a body arranged to be fixedly secured to the vehicle, saiddisabling member being connected to said transponder body and arrangedto be moved from a operative position with respect to said transponderbody to an inoperative position with respect to said transponder body,and vice versa, said disabling member comprising a metallic portion,said metallic portion being coupled to said antenna in such a manner asto disable said RFID circuitry when said disabling member is in saidoperative position, said RFID circuitry being arranged to beautomatically enabled when said disabling member is moved to saidinoperative position.
 2. The tag of claim 1 wherein said transponderbody comprises a card arranged to be secured to the windshield of thevehicle.
 3. The tag of claim 2 wherein said disabling member comprises athin, planar member pivotably connected to said card.
 4. The tag ofclaim 1 additionally comprising a first connector for releasablysecuring said disabling member in said operative position and a secondconnector for releasably securing said disabling member in saidinoperative position
 5. The tag of claim 3 additionally comprising afirst connector for releasably securing said disabling member in saidoperative position and a second connector for releasably securing saiddisabling member in said inoperative position.
 6. The tag of claim 4wherein said first connector comprises one component of a hook and loopconnector system, and wherein said second connector comprises onecomponent of a hook and loop connector system.
 7. The tag of claim 5wherein said first connector comprises one component of a hook and loopconnector system, and wherein said second connector comprises onecomponent of a hook and loop connector system.
 8. The tag of claim 1including visible indicia indicating the state of operation of said tag.9. The tag of claim 8 wherein said indicia is readily visible toobserver outside of the vehicle when said disabling member is in saidoperative position.
 10. The tag of claim 9 wherein said indiciacomprises a color.
 11. The tag of claim 9 wherein said indicia comprisesan alphanumeric character.
 12. The tag of claim 1 wherein saidtransponder includes a substrate with metallic traces and wherein saidmetallic portion of said disabling member comprises a portion of saidsubstrate.
 13. The tag of claim 1 wherein said metallic portion of saiddisabling member is arranged to alter the impedance of said antenna toshift its resonance frequency when said disabling member is in saidoperative position.
 14. The tag of claim 1 wherein said metallic portionof said disabling member is arranged to reduce the electric field atsaid antenna when said disabling member is in said operative position.15. A method of selectively disabling a RFID tag located on a vehicleand which is used in an electronic toll system or some other electronicsystem wherein a vehicle with the RFID tag is to be interrogated by areader to determine the vehicle's presence at a certain location, saidtag comprising an RFID transponder and an integrated disabling member,said RFID transponder comprising a body including an antenna and RFIDcircuitry, said tag being fixedly secured to the vehicle and arranged toprovide a first electrical signal when queried by a transmitter forminga portion of the electronic system, said disabling member including ametallic portion and being connected to said transponder body andarranged to be moved from a operative position with respect to saidtransponder body to an inoperative position with respect to saidtransponder body, and vice versa, said method comprising moving saiddisabling member with respect to said transponder body to said operativeposition whereupon said metallic portion of said disabling member iscoupled to said antenna in such a manner as to disable said RFIDcircuitry from producing said first electronic signal so long as saiddisabling member is in said operative position, said RFID circuitrybeing arranged to be automatically enabled upon movement of saiddisabling member to said inoperative position.
 16. The method of claim15 wherein said transponder body comprises a card arranged to be securedto the windshield of the vehicle and wherein the movement of saiddisabling member from said operative position to said inoperativeposition and vice versa is pivoting movement.
 17. The method of claim 15additionally comprising releasably securing said disabling member insaid operative position.
 18. The method of claim 15 additionallycomprising releasably securing said disabling member in said inoperativeposition
 19. The method of claim 15 wherein when said disabling memberis in said operative position said metallic portion of said disablingmember alters the impedance of said antenna to shift its resonancefrequency and to reduce the electric field at said antenna.
 20. Themethod of claim 15 wherein when said disabling member is in saidoperative position said metallic portion of said disabling member altersthe impedance of said antenna to shift its resonance frequency.
 21. Themethod of claim 15 wherein said tag is provided with visible indiciaindicating the state of operation of said tag.
 22. The method of claim21 wherein said indicia is readily visible to observer outside of thevehicle when said disabling member is in said operative position. 23.The method of claim 22 wherein said indicia comprises a color.
 24. Themethod of claim 22 wherein said indicia comprises an alphanumericcharacter.
 25. The method of claim 15 wherein the electronic system isan electronic toll system which is used on a roadway that includes ahigh occupancy vehicle or high occupancy toll (HOV or HOT, respectively)lane and wherein said method comprises: disabling said transponder bymoving said disabling member to said operative position when the vehicleis utilized in the HOV/HOT lane with at least the minimum number ofoccupants to meet the HOV/HOT requirements of the entity operating theelectronic toll system, so that the account associated with saidtransponder will not be charged when said transponder is queried by thetransmitter of the system.
 26. The method of claim 25 wherein saidmethod comprises: enabling said transponder by moving said disablingmember from said operative position to said inoperative position whenthe vehicle is utilized with less than the minimum number of occupantsto meet the HOV/HOT requirements of the entity operating the electronictoll system, so that the account associated with the transponder will becharged when said transponder is queried by the transmitter of thesystem.